There are four aspects of proper use of trademarks: visual distinction, consistency, proper adjectives, notice, and no possessiveness or plurals. Having exhausted that list in our past posts, we now switch gears, yet again, to explore the various ways in which trademark rights could be lost or terminated. As we will see in the next few posts, trademark rights can be lost or terminated in four ways, including “genericide,” “abandonment,” “improper assignment,” and “naked licensing.” In this regard, this post is a discussion of the concept of “genericide” and how it could lead to the loss or termination of trademark and ownership rights.
Genericide – The First Way through which Trademark Rights Could be Lost or Terminated
Under the trademark law, a trademark loses its entitlement to protection under this law after it becomes generic. This happens when the relevant public ceases associating a mark’s primary significance with the source of a good or product, but with the name of such a particular good or product. Some products, such as cellophane, aspirin, and escalator, became generic for this reason, although they were once protectable as individual trademarks.
In our post titled “The Proper Use of Trademarks under the Trademark Law,” we mentioned that marks are typically used as adjectives and gave KLEENEX tissue as a perfect example.” However, this does not imply that a mark does not necessarily become generic after it starts being used as a verb. For instance, if one says “good question, I’ll GOOGLE it” is different from the verbal usage of “GOOGLE it” as a trademark. In the second example, one may be talking about the mark in a generic and indiscriminate sense (but without any pre-conceived search engine), but it could also be used discriminately, using the mark with “GOOGLE” and the pre-conceived search engine of choice. However, when such usage becomes generic, the trademark rights could be lost or terminated.
In the next blog post and Part XI of the series, we shall move the discussion forward by hammering on “Losing/Terminating Trademark Rights Through ‘Abandonment.’”
Stay tuned for more legal guidance, training, and education. In the interim, if there are any questions or comments, please let us know at the Contact Us page!
Always rising above the bar,
Isaac T.,
Legal Writer, Author, & Publisher.